An IQOS URS ended up in smoke: After more than two hundred UDRP filings involving more than 300 infringing domains, Philip Morris lost its first filing at the National Arbitration Forum.
The URS involved the domain name hiqosuae.xyz that actively displays IQOS products. Philip Morris has been extremely protective of its brand, and they lost this one due to an unfortunate file encoding error.
What happened?
The domain transfer was denied.
Apparently, Exhibit B in the URS filing was a document formatted in a way that the NAF panelist was only able to see “hieroglyphics” instead of legible text:
Complainant alleges that such submission and validation are demonstrated by Complaint Exhibit B, but Complaint Exhibit B is illegible, consisting of three sheets of computer-encoded “hieroglyphics,” and there is no other evidence before the Examiner of Complainant’s use of its IQOS mark, or of its meeting any of the other criteria specified in URS Procedure 1.2.6.1. Accordingly, the Examiner must find that Complainant has not proven the first element set forth in URS Procedure 1.2.6 and 8.1.2. Inasmuch as the Procedure requires Complainant to prove each and every one of the three elements listed above, its Complaint in this matter must be dismissed.
The URS process has strict requirements and the Complainant must provide solid proof on each and every point. If that process expands over to .COM and .NET domains it’ll be a mess potentially involving millions of domain names.
Full details of this denied URS decision follows:
Philip Morris Products S.A. v. WhoisSecure
Claim Number: FA2008001907576
DOMAIN NAME
<hiqosuae.xyz>PARTIES
Complainant: Philip Morris Products S.A. of Neuchâtel, Switzerland.
Complainant Representative: DM KISCH INC of Sandton, International, South Africa.
Respondent: WhoisSecure.
Respondent Representative:
REGISTRAR
Registrar: XYZ.COM LLC
EXAMINER
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Examiner in this proceeding.
Charles A. Kuechenmeister, Examiner.
PROCEDURAL HISTORY
Complainant submitted: August 7, 2020
Commencement: August 10, 2020
Default Date: August 25, 2020
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the “Rules”) .
RELIEF SOUGHT
Complainant requests that the domain name be suspended for the life of the registration.
STANDARD OF REVIEW
Clear and convincing evidence.
FINDINGS and DISCUSSION
Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended:
· the registered domain name is identical or confusingly similar to a word mark: (i) for which the Complainant holds a valid national or regional registration and that is in current use; or (ii) that has been validated through court proceedings; or (iii) that is specifically protected by a statute or treaty currently in effect and that was in effect at the time the URS Complaint was filed; and
· Registrant has no legitimate right or interest to the domain name; and
· the domain was registered and is being used in bad faith.
The Examiner finds as follows:
The IQOS mark was registered to Complainant (Registration No. 660918) on July 7, 2014 with the Swiss trademark authority (Complaint Exhibit A). Complainant alleges that its IQOS mark is registered with the Trademark Clearinghouse, and that this should serve as sufficient proof of use for the purposes of this proceeding. Complainant is correct as to the legal significance of the submission of a trademark to and validation of it by the Trademark Commission (URS Procedure 8.1.2.1). Complainant alleges that such submission and validation are demonstrated by Complaint Exhibit B, but Complaint Exhibit B is illegible, consisting of three sheets of computer-encoded “hieroglyphics,” and there is no other evidence before the Examiner of Complainant’s use of its IQOS mark, or of its meeting any of the other criteria specified in URS Procedure 1.2.6.1. Accordingly, the Examiner must find that Complainant has not proven the first element set forth in URS Procedure 1.2.6 and 8.1.2. Inasmuch as the Procedure requires Complainant to prove each and every one of the three elements listed above, its Complaint in this matter must be dismissed.
DETERMINATION
After reviewing the Complainant’s submissions, the Examiner determines that the Complainant has NOT demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders that the following domain name be RETURNED to the control of Respondent:
HIQOSUAE.XYZ
Because the Determination in this proceeding results from what may well be a technical glitch or other similar problem, this Determination is issued without prejudice to Complainant’s right to re-file its Complaint against Respondent with proper supporting evidence.
Dated: August 25, 2020
Honorable Charles Kuechenmeister (Ret.), Examiner
Dated: August 25, 2020
